Why is it important to document the use of my trademark?

In Austria and the EU, the trademark can be invalidated and lose enforceability if genuine use hasn’t occurred for 5 years. Please be aware of the following points regarding the utilisation and documentation of your trademark’s use:

1. Proof of use could become relevant in the following scenarios:

• If proof of use is required during trademark application or renewal process (this is not the case in Austria or the EU)
• Cancellation request by third parties due to non-use
• Legal actions against third parties based on a trademark registration after expiry of the grace period
• Proving enhanced distinctiveness or reputation of the trademark due to extensive use
• Proving acquired distinctiveness due to extensive use

In practice, it may also become necessary to prove the use of the trademark in periods far in the past.

2. The use of the trademark in commerce should meet the following criteria:

• The trademark must be used as registered – minor deviations are generally acceptable as long as they do not negatively affect the mark's distinctiveness (particularly in the case of graphic designs of word and device marks, there may be some leeway).
• The trademark must be genuinely used to maintain or establish a market share for the goods or services protected by the mark. Genuine use does not include symbolic use for the sole purpose of preserving the rights granted by the mark.

3. Creating a "Usage Archive":

As it is typically very challenging and costly to put together proof of use within a short timeframe, especially to provide evidence on how a trademark was used many years ago, we recommend systematically storing/saving documents related to trademark use in order to be able to provide evidence of use at any given time "at a push of a button". The following documentation should be stored/saved:

• Product packaging + information regarding sales figures, sales territories and sales periods.
• Advertising material + information regarding addresses, places and extent of distribution, and the distribution period.
• Information on advertising campaigns (such as media plans and campaign reports, including representations of the advertising materials, subjects, commercials, etc.).
• Screenshots or printouts of the website + visitor statistics.
• Screenshots or printouts of social media profiles + numbers of subscribers, followers, etc.
• Information on sales numbers, market shares, advertising costs.
• Market surveys (as conducted, for example, for marketing purposes).

Documenting the use of your trademark can be vital for the continued existence of the registration and for its successful enforcement or defence. Therefore, we strongly recommend creating an archive of use.